The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent.  See Cisco Systems, Inc. v. Chrimar Systems, Inc, IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019).  In this decision, the PTAB addressed the § 315(a)(1) bar in view of the Federal Circuit’s en banc decision concerning the § 315(b) time bar in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).  Id. at 5-8.

Cisco filed an IPR petition challenging seven claims of U.S. Patent No. 8,902,760 (the “‘760 patent”).  Id. at 2, 5.  Prior to filing its petition, Cisco filed a civil action challenging the validity of a claim of the ‘760 patent, but Cisco later dismissed its lawsuit without prejudice.  Id. at 5.  Cisco argued, based in part on a 2016 PTAB decision, that § 315(a)(1) did not bar institution of its IPR petition because Cisco had dismissed its lawsuit without prejudice.  Id.  The PTAB disagreed based on the Federal Circuit’s subsequent opinion in Click-to-Call.

Under § 315(a)(1), IPR “may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.”  The PTAB followed guidance from the Federal Circuit’s Click-to-Call decision in holding that § 315(a)(1) barred institution of Cisco’s IPR petition even though Cisco dismissed its earlier lawsuit without prejudice.  Id. at 6-8.  Among other things, the PTAB noted that: (a) there is no exception in the statute for civil actions dismissed without prejudice, (b) the ordinary meaning of the phrase “file a civil action” only requires that litigation be commenced, and (c) legislative history did not support Cisco’s position.  Id. at 6-7.